NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

I/P ENGINE, INC.,

Plaintiff-Cross Appellant,

v.

AOL INC., GOOGLE INC., IAC SEARCH & MEDIA, 

INC., GANNETT COMPANY, INC., AND 

TARGET CORPORATION,

Defendants-Appellants.

______________________ 

2013-1307, -1313

______________________ 

Appeals from the United States District Court for the 

Eastern District of Virginia in No. 11-CV-0512, Judge 

Raymond Alvin Jackson.

______________________ 

Decided: August 15, 2014 

______________________ 

DAVID A. PERLSON, Quinn Emanuel Urquhart & Sullivan LLP, of San Francisco, California, argued for defendants-appellants. With him on the brief were EMILY C.

O’BRIEN, ANTONIO R. SISTOS, MARGARET P. KAMMERUD, 

and JOSHUA L. SOHN; and DAVE NELSON, of Chicago, 

Illinois. Of counsel were DAVID L. BILSKER and KEVIN 

ALEXANDER SMITH, of San Francisco, California, and 

ROBERT B. WILSON, of New York, New York. Of counsel 
2 I/P ENGINE, INC. v. AOL INC. 

on the brief for Google Inc. were DARYL L. JOSEFFER, King 

& Spalding LLP, of Washington, DC, and ADAM M.

CONRAD, of Charlotte, North Carolina. 

JOSEPH R. RE, Knobbe, Martens, Olson & Bear, LLP, 

of Irvine, California, argued for plaintiff-cross appellant. 

With him on the brief was STEPHEN W. LARSON. Of Counsel on the brief were JEFFREY K. SHERWOOD, FRANK C.

CIMINO, JR., KENNETH W. BROTHERS, DAWN RUDENKO

ALBERT, CHARLES J. MONTERIO, JR., and JONATHAN L.

FALKLER, Dickstein Shapiro LLP, of Washington, DC. 

EDWARD R. REINES and JILL J. SCHMIDT, Weil, Gotshal 

& Manges LLP, of Redwood Shores, California, for amici 

curiae Newegg Inc., et al.

______________________ 

Before WALLACH, MAYER, and CHEN, Circuit Judges.

Opinion for the court filed PER CURIAM. Concurring 

Opinion filed by Circuit Judge MAYER. Dissenting 

Opinion filed by Circuit Judge CHEN. 

PER CURIAM. 

I/P Engine, Inc. (“I/P Engine”) brought an action 

against AOL Inc., Google Inc. (“Google”), IAC Search & 

Media, Inc., Gannett Company, Inc., and Target Corporation (collectively, the “Google Defendants”) alleging infringement of U.S. Patent Nos. 6,314,420 (the “’420 

patent”) and 6,775,664 (the “’664 patent”). A jury returned a verdict finding that all asserted claims were 

infringed and not anticipated. J.A. 4163-73. The district 

court then determined that the asserted claims were not 

obvious and entered judgment in I/P Engine’s favor. See 

I/P Engine, Inc. v. AOL Inc., No. 11-CV-0512, 2012 U.S. 

Dist. LEXIS 166555 (E.D. VA Nov. 20, 2012) (“NonObviousness Order”). Because the asserted claims of the 
I/P ENGINE, INC. v. AOL INC. 3

’420 and ’664 patents are invalid for obviousness, we 

reverse. 

BACKGROUND

The ’420 and ’664 patents both claim priority to the 

same parent patent, U.S. Patent No. 5,867,799. They 

relate to a method for filtering Internet search results 

that utilizes both content-based and collaborative filtering. See ’420 patent col.1 ll.10-16, col.2 ll.20-26; ’664 

patent col.23 ll.29-44.1 Content-based filtering is a technique for determining relevance by extracting features 

such as text from an information item. ’420 patent col.4 

ll.22-26; see also J.A. 487. By contrast, collaborative 

filtering assesses relevance based on feedback from other 

users—it looks to what items “other users with similar 

interests or needs found to be relevant.” ’420 patent col.4 

ll.28-29; see also J.A. 487. The asserted patents describe a 

system “wherein a search engine operates with collaborative and content-based filtering to provide better search 

responses to user queries.” ’420 patent col.1 ll.14-16. 

Specifically, the asserted claims describe a filter system 

that combines content and collaborative data in filtering 

each “informon”—or information item—for relevance to a 

user’s query.2 Asserted claim 10 of the ’420 patent recites:

1 The specifications of the ’420 and ’664 patents are 

substantively identical, but employ slightly dissimilar line 

numbering. Unless otherwise noted, citations to the 

specification refer to the line numbering used in the ’420 

patent. 

2 The parties stipulated that the term “informon” 

referred to an “information entity of potential or actual 

interest to the [individual/first] user.” I/P Engine, Inc. v. 

AOL Inc., 874 F. Supp. 2d 510, 517 (E.D. Va. 2012) (internal quotation marks omitted) (“Claim Construction Or-

 
4 I/P ENGINE, INC. v. AOL INC. 

A search engine system comprising: a system 

for scanning a network to make a demand search 

for informons relevant to a query from an individual user; a content-based filter system for receiving the informons from the scanning system and 

for filtering the informons on the basis of applicable content profile data for relevance to the query; 

and a feedback system for receiving collaborative 

feedback data from system users relative to informons considered by such users; the filter system combining pertaining feedback data from the 

feedback system with the content profile data in 

filtering each informon for relevance to the query.

Id. col.28 ll.1-15; see also id. col.29 ll.32-44.

Asserted claim 1 of the ’664 patent provides:

A search system comprising: a scanning system for searching for information relevant to a 

query associated with a first user in a plurality of 

users; a feedback system for receiving information 

found to be relevant to the query by other users; 

and a content-based filter system for combining 

the information from the feedback system with 

the information from the scanning system and for 

filtering the combined information for relevance to 

at least one of the query and the first user.

’664 patent col.27 ll.27-37.

Claim 26 of the ’664 patent is similar to claim 1, but 

cast as a method claim: 

A method for obtaining information relevant 

to a first user comprising: searching for inforder”). The asserted patents explain that an “informon” 

can be all or part of a text, video, or audio file. ’420 patent 

col.3 ll.30-35.

 
I/P ENGINE, INC. v. AOL INC. 5

mation relevant to a query associated with a first 

user in a plurality of users; receiving information 

found to be relevant to the query by other users; 

combining the information found to be relevant to 

the query by other users with the searched information; and content-based filtering the combined 

information for relevance to at least one of the 

query and the first user.

Id. col.28 ll.56-65.

On September 15, 2011, IP/Engine3 filed a complaint 

in the United States District Court for the Eastern District of Virginia alleging that Google’s AdWords, AdSense 

for Search, and AdSense for Mobile Search systems, 

which display advertisements on web pages, infringed 

claims 10, 14, 15, 25, 27, and 28 of the ’420 patent and 

claims 1, 5, 6, 21, 22, 26, 28, and 38 of the ’664 patent. 

See Claim Construction Order, 874 F. Supp. 2d at 514-15. 

On December 5, 2011, the Google Defendants filed counterclaims, seeking declaratory judgments of noninfringement and invalidity of both the ’420 and ’664 

patents. Id. at 514.

Following a Markman hearing, the district court construed disputed claim terms. The court concluded that: 

(1) the term “collaborative feedback data” refers to “data 

from system users regarding what informons such users 

found to be relevant”; (2) the term “scanning a network” 

means “looking for or examining items in a network”; and 

(3) the term “demand search” refers to “a single search 

engine query performed upon a user request.” Id. at 525 

(internal quotation marks omitted).

During a twelve-day trial, the Google Defendants 

pointed to numerous prior art references to support their 

3 In 2012, I/P Engine became a subsidiary of Vringo, Inc. J.A. 2046-47.

 
6 I/P ENGINE, INC. v. AOL INC. 

contention that the claims of the ’420 and ’664 patents 

were invalid as anticipated and obvious. In particular, 

they argued that U.S. Patent No. 6,006,222 (“Culliss”) 

anticipated the asserted claims, and that those claims 

were obvious in view of: (1) U.S. Patent No. 6,202,058 

(“Rose”); (2) Yezdezard Z. Lashkari, Feature Guided 

Automated Collaborative Filtering (July 25, 1995) (M.S. 

thesis, Massachusetts Institute of Technology) 

(“WebHound”); and (3) Marko Balabanovic & Yoav Shoham, Content-Based, Collaborative Recommendation, 40 

Comms. of the ACM 66 (1997) (“Fab”).

The jury returned a verdict on November 6, 2012, 

finding that the Google Defendants had infringed all 

asserted claims and awarding damages of $30,496,155.4 

J.A. 4173. The jury also found that the asserted claims 

were not anticipated, and answered a special verdict form 

on factual issues pertaining to the obviousness inquiry. 

J.A. 4169-72. Specifically, the jury found that “Rose, 

[WebHound] and Fab[] were profile systems that did not 

disclose a tightly integrated search system, and could not 

filter information relevant to the query.” J.A. 4170, 4171-

72.

On November 20, 2012, the district court ruled that 

the Google Defendants had “failed to prove, by clear and 

convincing evidence, that the ’420 Patent or the ’664 

Patent [was] obvious.” Non-Obviousness Order, 2012 U.S. 

Dist. LEXIS 166555, at *9. The district court further 

determined that the equitable doctrine of laches barred 

I/P Engine from recovering damages for any infringement 

occurring prior to September 15, 2011, the date of its 

complaint. I/P Engine, Inc. v. AOL Inc., 915 F. Supp. 2d 

736, 746-49 (E.D. Va. 2012). The court explained that I/P 

Engine “had constructive notice that the Google Adwords 

4 The jury also awarded I/P Engine a running royalty of 3.5%. J.A. 4173.

 
I/P ENGINE, INC. v. AOL INC. 7

system potentially infringed its patents as of July 2005 

and [yet] failed to undertake any reasonable investigation 

to further determine if infringement was occurring.” Id. 

at 744. The court stated, moreover, that “[a]lthough 

Congress is best left to consider the merits of nonpracticing patent entities in our patent system, the dilatory nature of [I/P Engine’s] suit is precisely why the doctrine of laches has been applied to patent law.” Id. at 748. 

On December 18, 2012, the Google Defendants filed 

motions for a new trial and for judgment as a matter of 

law on non-infringement, invalidity, and damages. J.A. 

4252-381. I/P Engine also filed post-trial motions, arguing that the district court erred in applying the doctrine of 

laches to preclude recovery of damages for infringement 

in the period prior to September 15, 2011. J.A. 4433, 

4550-56. All of these motions were denied by the district 

court. J.A. 59-67.

The Google Defendants then filed a timely appeal 

with this court. They argue that: (1) the infringement 

determination should be set aside because the accused 

systems do not meet claim limitations which require 

“combining” content data with feedback data and filtering 

“the combined information”; (2) the accused systems do 

not meet the limitation contained in claim 10 of the ’420 

patent requiring a “demand search”; (3) I/P Engine improperly relied on marketing documents, rather than 

source code, in attempting to establish infringement and 

misled the jury by insinuating that Google had “copied” 

the system claimed in I/P Engine’s patents; (4) the district 

court erred as a matter of law in finding the asserted 

claims non-obvious; (5) the asserted claims are invalid as 

anticipated because Culliss discloses filtering Internet 

articles based on scores that combine both content and 

collaborative feedback data; and (6) I/P Engine failed to 

introduce any credible evidence of damages in the period 

following the filing of its complaint. I/P Engine filed a 

cross-appeal in which it argues that the district court 
8 I/P ENGINE, INC. v. AOL INC. 

erred in applying the doctrine of laches to bar recovery for 

infringement occurring prior to September 15, 2011. I/P 

Engine further contends that even if laches does apply, it 

is entitled to damages of more than $100 million for 

infringement occurring after the date it filed its complaint. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

I. Standard of Review

“Whether the subject matter of a patent is obvious is a 

question of law and is reviewed de novo.” Procter & 

Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 993 

(Fed. Cir. 2009); see PharmaStem Therapeutics, Inc. v. 

ViaCell, Inc., 491 F.3d 1342, 1359 (Fed. Cir. 2007). The 

factual findings underlying an obviousness determination 

include: (1) the scope and content of the prior art; (2) the 

differences between the claimed invention and the prior 

art; (3) the level of ordinary skill in the art; and (4) any 

objective indicia of non-obviousness. See Graham v. John 

Deere Co., 383 U.S. 1, 17-18 (1966).

II. The Obviousness Determination

The Google Defendants argue that I/P Engine’s 

claimed invention is obvious as a matter of law because it

simply combines content-based and collaborative filtering, 

two information filtering methods that were well-known 

in the art. They assert, moreover, that the prior art 

contained explicit statements describing the advantages 

of combining these two filtering techniques, and that it 

would have been obvious to include a user’s query in the 

filtering process. See Br. of Defendants-Appellants at 35-

38.

We agree and hold that no reasonable jury could conclude otherwise. The asserted claims describe a system 

that combines content and collaborative data in filtering 

each “informon”—or information item—for relevance to an 

individual user’s search query. ’420 patent col.28 ll.1-15; 
I/P ENGINE, INC. v. AOL INC. 9

’664 patent col.27 ll.27-37. As the asserted patents themselves acknowledge, however, search engines, contentbased filtering, and collaborative filtering were all wellknown in the art at the time of the claimed invention. See 

’420 patent col.1 ll.20-45. The record is replete, moreover, 

with prior art references recognizing that content-based 

and collaborative filtering are complimentary techniques 

that can be effectively combined. The WebHound reference explains that “content-based and automated collaborative filtering are complementary techniques, and the 

combination of [automated collaborative filtering] with 

some easily extractable features of documents is a powerful information filtering technique for complex information spaces.” J.A. 5427. The Fab reference likewise 

notes that “[o]nline readers are in need of tools to help 

them cope with the mass of content available on the 

World-Wide Web,” and explains that “[b]y combining both 

collaborative and content-based filtering systems,” many 

of the weaknesses in each approach can be eliminated. 

J.A. 5511. Similarly, the Rose patent, which was filed in 

1994 by engineers at Apple Computer, Inc., states that 

“[t]he prediction of relevance [to a user’s interests] is 

carried out by combining data pertaining to the content of 

each item of information with other data regarding correlations of interests between users.” J.A. 5414. These 

references, individually and collectively, teach the clear 

advantages of combining content-based and collaborative 

filtering.5

5 I/P Engine points to recent United States Patent 

and Trademark Office (“PTO”) reexamination proceedings 

which concluded that Rose and WebHound do not anticipate the asserted claims of the ’420 patent. J.A. 7899-

902. Here, however, the question is not whether Rose and 

WebHound anticipate the asserted claims, but instead 

whether the prior art, viewed as a whole, renders the 

 
10 I/P ENGINE, INC. v. AOL INC. 

On appeal, I/P Engine does not dispute that the prior 

art disclosed hybrid content-based and collaborative 

filtering. It contends, however, that it would not have 

been obvious to a person of ordinary skill in the art to 

filter items for relevance to a user’s query using combined 

content and collaborative data. In I/P Engine’s view, the 

prior art simply took the results of content-based filtering 

and “threw them over a proverbial wall to a separate 

profile-based [filtering] system,” but did not also throw 

the search query “over the wall” for use in the filtering 

process. Br. of Plaintiff-Cross Appellant at 6-7; see also 

id. at 40-43; J.A. 3689-90, 3728-31.

The fundamental flaw in I/P Engine’s argument is 

that using an individual user’s search query for filtering 

was a technique widely applied in the prior art. Indeed, 

the shared specification of the ’420 and ’664 patents 

acknowledges that “conventional search engines” filtered 

search results using the original search query. See ’420 

patent col.2 ll.15-18 (explaining that “conventional search 

engines initiate a search in response to an individual 

user’s query and use content-based filtering to compare 

the query to accessed network informons” (emphasis 

added)). Given that its own patents acknowledge that 

using the original search query for filtering was a “conventional” technique, I/P Engine cannot now evade invalidity by arguing that integrating the query into the 

asserted claims obvious. See Cohesive Techs., Inc. v. 

Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (“Obviousness can be proven by combining existing prior art 

references, while anticipation requires all elements of a 

claim to be disclosed within a single reference.”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir. 

2006) (explaining that in an obviousness analysis “the 

prior art must be considered as a whole for what it teaches”). 

 
I/P ENGINE, INC. v. AOL INC. 11

filtering process was a non-obvious departure from the 

prior art. See PharmaStem, 491 F.3d at 1362 (“Admissions in the specification regarding the prior art are 

binding on the patentee for purposes of a later inquiry 

into obviousness.”); see also Constant v. Advanced MicroDevices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A 

statement in a patent that something is in the prior art is 

binding on the applicant and patentee for determinations 

of anticipation and obviousness.”).

While I/P Engine acknowledges that the prior art disclosed “conventional ‘content-based filtering’ in response 

to a query,” it contends that the prior art did “not show or 

suggest using content and collaborative data together in 

filtering items for relevance to a query.” Br. of PlaintiffCross Appellant at 43. This argument “tak[es] an overly 

cramped view of what the prior art teaches.” Allergan, 

Inc. v. Apotex Inc., 754 F.3d 952, 963 (Fed. Cir. 2014). 

The Culliss patent renders the asserted claims obvious 

because it plainly discloses using combined content and 

collaborative data when analyzing information for relevance to a user’s search query. In the Culliss system, 

Internet articles are assigned a “key term score” for 

significant words or phrases. J.A. 5521. Culliss teaches 

content-based analysis because the key term score can 

initially be based on the number of times a particular 

term appears in an article.6 J.A. 5526. Culliss also 

6 Dr. Jaime Carbonell, I/P Engine’s expert, asserted 

that Culliss does not disclose content-based filtering as 

required by the asserted claims because Culliss’ repeated 

feedback-based adjustments to a key term score will 

dilute or “swamp” the content portion of the score over 

time. J.A. 3714, 3787. Notably, however, while the 

asserted claims require content-based filtering, they do 

not mandate that content-based analysis play a dominant 

role in the filtering process. See ’420 patent col.28 ll.1-15; 

 
12 I/P ENGINE, INC. v. AOL INC. 

describes collaborative feedback analysis because the key 

term score will be increased when search engine users 

who query particular key terms select an article from the 

search results list. J.A. 5521. Significantly, moreover, 

Culliss presents articles to users based upon their key 

term scores for the terms that were used in a user’s 

search query. J.A. 5521 (“As users enter search queries 

and select articles, the scores are altered. The scores are 

then used in subsequent searches to organize the articles 

that match a search query.” (emphasis added)). Culliss, 

therefore, squarely discloses using combined content and 

collaborative data in analyzing items for relevance to a 

query.

I/P Engine contends that Culliss does not anticipate 

because it “describes a system for ranking items, not 

filtering them, as required by the asserted claims.” Br. of 

Plaintiff-Cross Appellant at 54. As Dr. Lyle Ungar, the 

Google Defendants’ expert, explained at trial, however, 

“the standard way of filtering is to rank things and pick 

all items above a threshold.” J.A. 3366. Notably, moreover, Culliss discloses an embodiment in which articles 

’664 patent col.27 ll.27-37. Thus, the fact that in the 

Culliss system content data may play less and less of a 

role as more user feedback is obtained does not mean that 

Culliss does not disclose content-based filtering. To the 

contrary, Culliss explains that while feedback can raise 

an article’s key term score (when the article is clicked on 

by other users), it can also lower that score (when the 

article is not clicked on by other users). J.A. 5527 (“[I]f 

the user does not select the matched article, the key term 

score for that matched article under that key term can be 

assigned a negative score.”). Thus, the positive and 

negative feedback adjustments could potentially nearly 

“cancel each other out,” and content data could play a 

very significant role in setting an article’s overall score. 

 
I/P ENGINE, INC. v. AOL INC. 13

that are given an “X-rated” score for adult content are 

filtered out and not displayed to persons who enter “Grated” queries. J.A. 5525. At trial, Carbonell asserted 

that Culliss was not enabled because it did not provide for 

a “workable” filtering system. J.A. 3717. In support, he 

argued that a certain number of G-rated searchers might 

have to view an article before it would be labeled as Xrated and screened from subsequent G-rated searches. 

J.A. 3718-19. There is no credible evidence, however, that 

Culliss would not ultimately succeed in filtering X-rated 

articles from being viewed by G-rated searchers. See

Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 

1337 (Fed. Cir. 2013) (emphasizing that a patent is presumptively enabled and that “the challenger bears the 

burden, throughout the litigation, of proving lack of 

enablement by clear and convincing evidence”). Even 

more importantly, while “a prior art reference cannot 

anticipate a claimed invention if the allegedly anticipatory disclosures cited as prior art are not enabled,” In re 

Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012) 

(citations and internal quotation marks omitted), a nonenabling reference can potentially qualify as prior art for 

the purpose of determining obviousness, Symbol Techs. 

Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991); 

see Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 

618 F.3d 1294, 1302 (Fed. Cir. 2010) (“Under an obviousness analysis, a reference need not work to qualify as 

prior art; it qualifies as prior art, regardless, for whatever 

is disclosed therein.” (citations and internal quotation 

marks omitted)); Beckman Instruments, Inc. v. LKB 

Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) 

(“Even if a reference discloses an inoperative device, it is 

prior art for all that it teaches.”). Thus, even assuming 

arguendo that the Culliss filtering system was not fully 

functional, this does not mean that it does not qualify as 

prior art for purposes of the obviousness analysis.
14 I/P ENGINE, INC. v. AOL INC. 

Significantly, moreover, the obviousness inquiry “not 

only permits, but requires, consideration of common 

knowledge and common sense.” DyStar Textilfarben 

GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1367 

(Fed. Cir. 2006); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 

398, 421 (2007) (eschewing “[r]igid preventative rules that 

deny factfinders recourse to common sense”); Perfect Web 

Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. 

Cir. 2009) (explaining that the obviousness analysis “may 

include recourse to logic, judgment, and common sense 

available to the person of ordinary skill that do not necessarily require explication in any reference or expert 

opinion”); Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 

F.3d 1157, 1161 (Fed. Cir. 2007) (emphasizing that “the 

common sense of those skilled in the art” can be sufficient 

to “demonstrate[] why some combinations would have 

been obvious where others would not”). Very basic logic 

dictates that a user’s search query can provide highly 

pertinent information in evaluating the overall relevance 

of search results. See, e.g., 420 patent col.1 ll.21-23 (explaining that a “query” is “a request for information 

relevant to . . . a field of interest”); id. col.4 ll.5-6 (“The 

‘relevance’ of a particular informon broadly describes how 

well it satisfies the user’s information need.”). As Ungar 

explained, the query would be just “sitting there” with the 

results of a search, and it would have been obvious to one 

skilled in the art “to keep around the query and use that 

also for filtering.” J.A. 3173.7 “A person of ordinary skill 

is . . . a person of ordinary creativity, not an automaton,” 

KSR, 550 U.S. at 421, and the obviousness inquiry must 

take account of the “routine steps” that a person of ordi7 The parties stipulated that, for purposes of both 

the ’420 and ’664 patents, a person of ordinary skill in the 

art was “an individual with a bachelor’s degree in computer science with at least [two] years of experience.” J.A. 

39.

 
I/P ENGINE, INC. v. AOL INC. 15

nary skill in the art would employ, Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 

993 (Fed. Cir. 2009); see Soverain Software LLC v. 

Newegg Inc., 705 F.3d 1333, 1344, amended on reh’g, 728 

F.3d 1332 (Fed. Cir. 2013) (concluding that claims directed to an online shopping system were invalid as 

obvious given that the patentee “did not invent the Internet, or hypertext, or the URL” and using hypertext to 

communicate transaction information was no more than 

“a routine incorporation of Internet technology into 

existing processes”). Because the query was readily 

available and closely correlated to the overall relevance of 

search results—and the prior art unequivocally disclosed 

hybrid content-based/collaborative filtering—retaining 

the query for use in filtering combined content and collaborative data was “entirely predictable and grounded in 

common sense.” Ball Aerosol, 555 F.3d at 993; see W. 

Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 

1361, 1372 (Fed. Cir. 2010) (concluding that the asserted 

dependent claims, which “add[ed] only trivial improvements that would have been a matter of common sense to 

one of ordinary skill in the art,” were obvious as a matter 

of law); Perfect Web, 587 F.3d at 1331 (concluding that a 

claimed method for sending e-mails was obvious because 

“simple logic suggests that sending messages to new 

addresses is more likely to produce successful deliveries 

than re-sending messages to addresses that have already 

failed”); Muniauction, Inc. v. Thomson Corp., 532 F.3d 

1318, 1326-27 (Fed. Cir. 2008) (concluding that claims 

which added a web browser to a prior art electronic system were obvious as a matter of law). While our conclusion that the asserted claims are invalid as obvious is 

grounded on the determination that the prior art, most 

notably Culliss, disclosed use of the search query when 

filtering combined content-based and collaborative data, 

the common sense of a skilled artisan would likewise have 

suggested retaining the query for use in the filtering 

process.
16 I/P ENGINE, INC. v. AOL INC. 

III. The Jury’s Findings

I/P Engine points to the fact that the jury found that 

there were differences between the prior art and the 

claimed invention, see J.A. 4170-72, and argues that on 

appeal “the only question is whether substantial evidence 

supports the jury’s findings.” Br. of Plaintiff-Cross Appellant at 40. There are a number of reasons why we do not 

find this reasoning persuasive. First, not all of the jury’s 

findings support non-obviousness. To the contrary, the 

jury found that the invention claimed in the ’664 patent 

had been “independent[ly] invent[ed] . . . by others before 

or at about the same time as the named inventor thought 

of it.” J.A. 4172. As we have previously made clear, nearsimultaneous development of a claimed invention by 

others can, under certain circumstances, demonstrate 

obviousness. See Geo. M. Martin, 618 F.3d at 1305 (“Independently made, simultaneous inventions, made within 

a comparatively short space of time, are persuasive evidence that the claimed apparatus was the product only of 

ordinary mechanical or engineering skill.” (citations and 

internal quotation marks omitted)). Thus, as the Google 

Defendants correctly note, the jury’s findings are a “mixed 

bag” on the obviousness question. Br. of DefendantsAppellants at 40.

Second, some of the jury’s findings appear internally 

inconsistent. In making their arguments on obviousness, 

neither I/P Engine nor the Google Defendants drew any 

distinction between the ’420 patent and the ’664 patent. 

Indeed, counsel for I/P Engine referred to the asserted 

patents simply as the “Lang and Kosak invention” when 

discussing differences between the prior art and the 

asserted claims. J.A. 3730. The jury found, however, that 

the invention claimed in the ’664 patent had been independently invented by others, whereas the invention 

claimed in the ’420 patent had not. J.A. 4171-72. Likewise, while the jury found that there had been unsuccessful attempts by others to develop the invention claimed in 
I/P ENGINE, INC. v. AOL INC. 17

the ’420 patent, it determined that there were no such 

attempts with respect to the invention disclosed in the 

’664 patent. J.A. 4170, 4172.

Finally, and most importantly, while the jury made 

underlying determinations as to the differences between 

the asserted claims and the prior art, it did not address 

the ultimate legal conclusion as to obviousness. Thus, 

while the jury found that the prior art did not disclose all 

of the elements of the asserted claims, J.A. 4170-71, it 

never determined whether it would have been obvious to 

one skilled in the art to bridge any differences between 

the prior art and the claimed invention. See Bos. Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 990 (Fed. 

Cir. 2009) (“When we consider that, even in light of a 

jury’s findings of fact, the references demonstrate an 

invention to have been obvious, we may reverse its obviousness determination.”); see also Soverain, 705 F.3d at 

1337 (emphasizing that “the question of obviousness as a 

matter of law receives de novo determination on appeal”); 

Jeffries v. Harleston, 52 F.3d 9, 14 (2d Cir. 1995) (concluding that “hopelessly irreconcilable” jury findings did not 

require a retrial because “elementary principles” of law 

compelled one result).

IV. Objective Indicia of Non-Obviousness

“This court has consistently pronounced that all evidence pertaining to the objective indicia of nonobviousness must be considered before reaching an obviousness 

conclusion.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 

1343, 1355 (Fed. Cir. 2013). Here, however, I/P Engine 

introduced scant evidence on secondary considerations. 

See Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1293 

(Fed. Cir. 2013) (concluding that secondary considerations 

did “not weigh heavily in the obviousness analysis”). 

Indeed, the district court did not even cite to the jury’s 

findings on secondary considerations when it concluded 

that the asserted claims were not invalid for obviousness. 
18 I/P ENGINE, INC. v. AOL INC. 

See Non-Obviousness Order, 2012 U.S. Dist. LEXIS 

166555, at *7-9.

We find no merit in I/P Engine’s argument that the 

commercial success of Google’s accused advertising systems provides objective evidence of non-obviousness. 

“Evidence of commercial success, or other secondary 

considerations, is only significant if there is a nexus 

between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 

1311-12 (Fed. Cir. 2006). At trial, however, I/P Engine 

never established a nexus between the success of Google’s 

accused systems and the patented invention.8 Indeed, I/P 

Engine’s damages expert agreed that the accused technology encompassed numerous features not covered by the 

asserted patents, and acknowledged that he had not 

evaluated the issue of whether the patented technology 

drove consumer demand for Google’s advertising platform. 

J.A. 2772-73.

Under certain circumstances, the “copying” of an invention by a competitor may constitute evidence that an 

invention is not obvious. See Iron Grip Barbell Co., Inc. v. 

USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004);

Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 

(Fed. Cir. 1984). Contrary to I/P Engine’s assertions, 

however, the fact that one of Google’s patents cited to the 

’420 patent does not establish that Google copied the 

invention disclosed in that patent. Nor is the fact that 

Google did not provide evidence at trial as to how it 

developed its accused advertising system sufficient to 

8 Nor did I/P Engine present evidence that any 

owner of the asserted patents had ever used the claimed 

system commercially. See Soverain, 705 F.3d at 1346 

(finding no commercial success where the claimed electronic commerce system “was abandoned by its developers 

and almost all of its original users”).

 
I/P ENGINE, INC. v. AOL INC. 19

establish that it copied the claimed invention. See Wyers 

v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) 

(“Our case law holds that copying requires evidence of 

efforts to replicate a specific product, which may be 

demonstrated through internal company documents, 

direct evidence such as disassembling a patented prototype, photographing its features, and using the photograph as a blueprint to build a replica, or access to the 

patented product combined with substantial similarity to 

the patented product.”).

The jury found “[a]cceptance by others of the claimed 

invention as shown by praise from others in the field or 

from the licensing of the claimed invention.” J.A. 4171-

72. Carbonell acknowledged, however, that although he 

had been in the “search industry” for thirty years he was 

unaware of any “praise” that I/P Engine’s purported 

invention had received. J.A. 3788. Likewise, although 

the jury found “unexpected and superior results from the 

claimed invention,” J.A. 4171-72, there was no evidence, 

other than conclusory testimony from Carbonell, see J.A. 

3691-92, 3740, that the results of the patented system 

were unexpected. See SkinMedica, Inc. v. Histogen Inc., 

727 F.3d 1187, 1210 (Fed. Cir. 2013) (emphasizing that 

expert opinions that “are conclusory and incomplete” have 

little evidentiary value). Accordingly, secondary considerations cannot overcome the strong prima facie case of 

obviousness.9 See Leapfrog, 485 F.3d at 1162.

CONCLUSION

Accordingly, the judgment of the United States District Court for the Eastern District of Virginia is reversed. 

REVERSED

9 Because we conclude that the asserted claims are

obvious as a matter of law, we need not reach issues 

related to infringement and damages.

 
NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

I/P ENGINE, INC.,

Plaintiff-Cross Appellant,

v.

AOL INC., GOOGLE INC., IAC SEARCH & MEDIA, 

INC., GANNETT COMPANY, INC., AND TARGET 

CORPORATION,

Defendants-Appellants.

______________________ 

2013-1307, -1313

______________________ 

Appeals from the United States District Court for the 

Eastern District of Virginia in No. 11-CV-0512, Judge 

Raymond Alvin Jackson.

______________________ 

MAYER, Circuit Judge, concurring.

The Supreme Court in Alice Corporation v. CLS Bank 

International, 573 U.S. __, 134 S. Ct. 2347, 2359 (2014), 

for all intents and purposes, recited a “technological arts” 

test for patent eligibility. Because the claims asserted by 

I/P Engine, Inc. (“I/P Engine”) disclose no new technology, 

but instead simply recite the use of a generic computer to 

implement a well-known and widely-practiced technique 

for organizing information, they fall outside the ambit of 

35 U.S.C. § 101. And if this determination had been made 

in the first instance as directed by the Supreme Court, 
2 I/P ENGINE, INC. v. AOL INC. 

unnecessary litigation, and nearly two weeks of trial and 

imposition on citizen jurors, could have been avoided.

I.

“[T]he patent system represents a carefully crafted bargain that encourages both the creation and the 

public disclosure of new and useful advances 

in technology, in return for an exclusive monopoly for a 

limited period of time.” Pfaff v. Wells Elecs., Inc., 525 U.S. 

55, 63 (1998). A patentee does not uphold his end of this 

bargain if he seeks broad monopoly rights over a fundamental concept or basic idea without a concomitant contribution to the existing body of scientific and 

technological knowledge. Alice thus made clear that 

abstract ideas untethered to any significant advance in 

science and technology are ineligible for patent protection, 

concluding that a computer-implemented system for 

mitigating settlement risk fell outside section 101 because 

it did not “improve the functioning of the computer itself” 

or “effect an improvement in any other technology or 

technical field.” 134 S. Ct. at 2359; see also id. at 2358

(explaining that the claims in Diamond v. Diehr, 450 U.S. 

175, 177-79 (1981) (“Diehr”), were patent eligible because 

they disclosed an “improve[ment]” to a “technological 

process”).

Application of the technological arts test1 for patent 

eligibility requires consideration of whether the claimed 

“inventive concept,” Mayo Collaborative Servs. v. Prome1 One of our predecessor courts likewise applied a 

technological arts test for patent eligibility. It recognized 

that patentable processes must “be in the technological 

arts so as to be in consonance with the Constitutional 

purpose to promote the progress of ‘useful arts.’” In re 

Musgrave, 431 F.2d 882, 893 (CCPA 1970) (quoting U.S. 

Const. art. I, § 8, cl. 8). 

 
I/P ENGINE, INC. v. AOL INC. 3

theus Labs., Inc., 132 S. Ct. 1289, 1294 (2012), is an 

application of scientific principles or natural laws. See In 

re Bilski, 545 F.3d 943, 1010 (Fed. Cir. 2008) (en banc) 

(Mayer, J., dissenting), aff’d on other grounds sub nom.

Bilski v. Kappos, 561 U.S. 593 (2010) (“[A] process is nontechnological where its inventive concept is the application of principles drawn not from the natural sciences but 

from disciplines such as business, law, sociology, or psychology.”). Importantly, claims do not meet the demands 

of section 101 simply because they recite the use of computers or other technology. Instead, the inventive concept 

itself must be new technology, a novel application of 

scientific principles and natural laws to solve problems 

once thought intractable. See id. at 1002 (“Although 

business method applications may use technology—such 

as computers—to accomplish desired results, the innovative aspect of the claimed method is an entrepreneurial 

rather than a technological one.”). The claims at issue in 

Alice may well have described a useful and innovative 

method of doing business,2 but because they did not 

2 In Alice, the Supreme Court concluded that the 

concept of intermediated settlement was a patentineligible abstract idea. 134 S. Ct. at 2355-57. But 

whether the “concept” of intermediated settlement is an 

abstract idea is a wholly different question from whether 

the claimed invention provided a useful and innovative 

application of that concept. Significantly, in determining 

whether the asserted claims disclosed an inventive concept sufficient to make the claimed abstract idea patent

eligible, the Court looked solely at the technology—asking 

only whether the recited computer elements were “wellunderstood, routine, [and] conventional.” Id. at 2359

(citations and internal quotation marks omitted). The 

issue of whether the claimed intermediated settlement 

technique represented an innovative method for improving commercial transactions was not addressed because 

 
4 I/P ENGINE, INC. v. AOL INC. 

disclose any significant advance in science or technology, 

they fell outside section 101. See 134 S. Ct. at 2359

(noting that the claimed method simply “require[d] a 

generic computer to perform generic computer functions”).

Section 101 mandates not only that claims disclose an 

advance in science or technology—as opposed to an innovation in a non-technological discipline such as business, 

law, sports, sociology, or psychology—but also that this 

advance be both significant and well-defined. Id. at 2360 

(“[T]he claims at issue amount to nothing significantly

more than an instruction to apply the abstract idea of 

intermediated settlement using some unspecified, generic 

computer.” (citations and internal quotation marks omitted) (emphasis added)); see also Mayo, 132 S. Ct. at 1297 

(“The question before us is whether the claims do significantly more than simply describe” a law of nature. (emphasis added)). Of course, if claims are drawn to the 

application of principles outside of the scientific realm—

such as principles related to commercial or social interaction—no amount of specificity can save them from patent 

ineligibility. In Bilski, for example, a method was rejected under section 101 notwithstanding the fact that it 

described a very specific method of using historical 

weather-related data to hedge against price increases. 

130 S. Ct. at 3223-24; see Parker v. Flook, 437 U.S. 584, 

593 (1978) (“Flook”) (rejecting the argument “that if a 

process application implements a principle in some specific fashion, it automatically falls within the patentable 

subject matter of § 101”). Meaningful, well-defined limits 

on the application of a principle or idea are thus a necessary, but not a sufficient, prerequisite for patent eligibility. Requiring carefully circumscribed bounds on the 

advances in non-technological disciplines, such as business, are irrelevant for purposes of the section 101 inquiry.

 
I/P ENGINE, INC. v. AOL INC. 5

application of scientific principles and natural laws serves 

to ensure that “the basic tools of scientific and technological work,” Gottschalk v. Benson, 409 U.S. 63, 67, (1972), 

remain “free to all men and reserved exclusively to none,” 

Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 

130 (1948); see Mayo, 132 S. Ct. at 1293.3

In the more difficult cases—where it is uncertain 

whether claims are sufficiently “technological” to warrant 

patent protection—subject matter eligibility will often 

turn on whether the claims describe a narrow inventive 

application of a scientific principle, or instead simply 

recite steps that are necessarily part of the principle 

itself. See Mayo, 132 S. Ct. at 1297 (explaining that a 

process reciting a law of nature is not patent eligible 

unless it “has additional features that provide practical 

assurance that the process is more than a drafting effort 

designed to monopolize the law of nature itself”). In 

Mayo, for example, claims were rejected, in part, because 

they were “overly broad,” id. at 1301, and did “not confine 

their reach to particular applications,” id. at 1302. The 

need for specificity sufficient to cabin the scope of an 

invention is particularly acute in the software arena, 

where claims tend to be exceedingly broad, development 

proceeds at breakneck speed, and innovation often occurs 

3 There is, of course, some “overlap” between the eligibility analysis under section 101 and the obviousness 

inquiry under 35 U.S.C. § 103. Mayo, 132 S. Ct. at 1304. 

Section 103, however, asks the narrow question of whether particular claims are obvious in view of the prior art. 

By contrast, the section 101 inquiry is broader and more 

essential: it asks whether the claimed subject matter, 

stripped of any conventional elements, is “the kind of 

‘discover[y]’” that the patent laws were intended to protect. Flook, 437 U.S. at 593. 

 
6 I/P ENGINE, INC. v. AOL INC. 

despite the availability of patent protection rather than 

because of it.

Finally, and most importantly, the technological arts 

test recognizes that there has to be some rough correlation between “the give and the get”—applicants who make 

little, if any, substantive contribution to the existing body 

of scientific and technological knowledge should not be 

afforded broad monopoly rights that potentially stifle 

future research and development. In assessing patent 

eligibility, “the underlying functional concern . . . is 

a relative one: how much future innovation is foreclosed 

relative to the contribution of the inventor.” Mayo, 132 S. 

Ct. at 1303. At its core, section 101 prohibits claims 

which are “overly broad,” id. at 1301, in proportion to the 

technological dividends they yield.

II.

I/P Engine’s claimed invention, which describes a system which filters information for relevance to a user’s 

query using combined content and collaborative data, see 

U.S. Patent No. 6,314,420 col.28 ll.1-15; U.S. Patent No. 

6,775,664 col.27 ll.27-37, does not pass muster under 

section 101. The asserted claims do not meet subject 

matter eligibility requirements because they do not “improve the functioning of the computer itself” or “effect an 

improvement in any other technology or technical field.” 

Alice, 134 S. Ct. at 2359. To the contrary, the use of 

search engines was well-established and the clear advantages of combining content-based and collaborative 

filtering were widely recognized at the time of the claimed 

invention. See ante at 8-9. 

The asserted claims simply describe the well-known 

and widely-applied concept that it is often helpful to have 

both content-based and collaborative information about a 
I/P ENGINE, INC. v. AOL INC. 7

specific area of interest.4 A person planning to visit 

London, for example, might consult a guidebook that 

would provide information about particular museums in 

London (content data) as well as information about what 

other people thought of these museums (collaborative 

data). See J.A. 4255-56.

I/P Engine’s claimed system is merely an Internet iteration of the basic concept of combining content and 

collaborative data, relying for implementation on “a 

generic computer to perform generic computer functions.” 

Alice, 134 S. Ct. at 2359; see also id. (explaining that 

using a computer to obtain data is “well-understood” and 

“routine” (citations and internal quotation marks omitted)); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 

1366, 1370 (Fed. Cir. 2011) (concluding that a claim which 

disclosed the “mere collection and organization of data 

regarding credit card numbers and Internet addresses” 

was patent ineligible).

Moreover, the scope of the claimed invention is staggering, potentially covering a significant portion of all 

online advertising. I/P Engine’s asserted claims fall 

outside section 101 because their broad and sweeping 

4 In its appeal brief, I/P Engine notes that the 

shared specification of the asserted patents describes “a 

variety of ways in which content and collaborative feedback data can be combined,” including through the use of 

a “complex neural network function.” Br. of PlaintiffCross Appellant at 10. As we recently made clear, however, “the important inquiry for a § 101 analysis is to look to 

the claim[s].” Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013). 

Accordingly, “the complexity of the implementing software or the level of detail in the specification does not 

transform a claim reciting only an abstract concept into a 

patent-eligible system or method.” Id.

 
8 I/P ENGINE, INC. v. AOL INC. 

reach is vastly disproportionate to their minimal technological disclosure.

III.

The Supreme Court has dictated that the subject matter eligibility analysis must precede the obviousness 

inquiry. Flook, 437 U.S. at 593 (“The obligation to determine what type of discovery is sought to be patented” so 

as to determine whether it falls within the ambit of section 101 “must precede the determination of whether that 

discovery is, in fact, new or obvious.”); Bilski, 130 S. Ct. at 

3225 (explaining that the issue of whether claims are 

directed to statutory subject matter is “a threshold test”); 

see also In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) 

(“Only if the requirements of § 101 are satisfied is the 

inventor allowed to pass through to the other requirements for patentability, such as novelty under § 102 and 

. . . non-obviousness under § 103.” (citations and internal 

quotation marks omitted)). To fail to address at the very 

outset whether claims meet the strictures of section 101 is 

to put the cart before the horse. Until it is determined 

that claimed subject matter is even eligible for patent 

protection, a court has no warrant to consider subordinate 

validity issues such as non-obviousness under 35 U.S.C. 

§ 103 or adequate written description under 35 U.S.C. 

§ 112.

From a practical perspective, there are clear advantages to addressing section 101’s requirements at the 

outset of litigation. Patent eligibility issues can often be 

resolved without lengthy claim construction, and an early 

determination that the subject matter of asserted claims 

is patent ineligible can spare both litigants and courts 

years of needless litigation. To the extent that certain 

classes of claims—such as claims on methods of doing 

business—are deemed presumptively patent ineligible, 

moreover, the United States Patent and Trademark Office 

will have more resources to devote to expeditiously pro-
I/P ENGINE, INC. v. AOL INC. 9

cessing applications which disclose truly important advances in science and technology.

Even more fundamentally, the power to issue patents 

is not unbounded. To the contrary, the constitutional 

grant of authority “[t]o promote the Progress of Science 

and useful Arts, by securing for limited Times to Authors 

and Inventors the exclusive Right to their respective 

Writings and Discoveries,” U.S. Const. art. I, § 8, cl. 8, “is 

both a grant of power and a limitation,” Graham v. John 

Deere Co., 383 U.S. 1, 5 (1966); see Bonito Boats, Inc. v. 

Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989). 

Section 101’s vital role—a role that sections 103 and 112 

“are not equipped” to take on, Mayo, 132 S. Ct. at 1304—

is to insure that patent protection promotes, rather than 

impedes, scientific progress and technological innovation. 

A robust application of section 101 ensures that the 

nation’s patent laws remain tethered to their constitutional moorings.
NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

I/P ENGINE, INC.,

Plaintiff-Cross Appellant,

v.

AOL INC., GOOGLE INC., IAC SEARCH & MEDIA, 

INC., GANNETT COMPANY, INC., AND TARGET 

CORPORATION,

Defendants-Appellants.

______________________ 

2013-1307, -1313

______________________ 

Appeals from the United States District Court for the 

Eastern District of Virginia in No. 11-CV-0512, Judge 

Raymond Alvin Jackson.

______________________ 

CHEN, Circuit Judge, dissenting.

After a twelve-day trial during which both sides presented evidence about the teachings of the prior art, the

jury made detailed factual findings pertaining to the 

obviousness of the ’420 and ’664 patents. The jury found, 

among other findings, that elements of the asserted 

claims were not present in the prior art. Based on the 

jury’s findings, the district court determined that the 

Defendants had failed to prove by clear and convincing 

evidence that the asserted claims were obvious. In reversing the district court’s judgment, the majority finds 
2 I/P ENGINE, INC. v. AOL INC. 

that the prior art discloses a key claim limitation that the 

jury found was missing, and also concludes that the 

district court erred in failing to use “common sense” to 

bridge the differences between the prior art and the 

claims. In my view, the majority fails to accord sufficient 

deference to the jury’s findings of fact. Moreover, I find 

that the majority’s use of common sense to bridge the gap 

between the prior art and the claims is unsupported by 

sufficient evidence and reasoning. I respectfully dissent. 

At the outset, it is worth noting that obviousness is a 

mixed question of law and fact. Kinetic Concepts, Inc. v. 

Smith & Nephew, Inc., 688 F.3d 1342, 1356 (Fed. Cir. 

2012). Although we must examine the legal conclusion of 

obviousness de novo, we should tread lightly when reviewing a legal conclusion—reached by a trial court—that 

rests upon a jury’s findings of fact. See Polaroid Corp. v. 

Eastman Kodak Co., 789 F.2d 1556, 1558 (Fed. Cir. 1986) 

(“Though it is well settled that the ultimate conclusion on 

obviousness is . . . a legal conclusion, that does not 

mean . . . that we may proceed on a paper record as 

though no trial had taken place. This court reviews 

judgments. Because we do not retry the case, [the appellant] must to prevail convince us that the judgment 

cannot stand on the record created at trial . . . . ”); cf. 

Haebe v. DOJ, 288 F.3d 1288, 1299 (Fed. Cir. 2002) 

(“[G]reat deference must be granted to the trier of fact 

who has had the opportunity to observe the demeanor of 

the witnesses, whereas the reviewing body looks only at 

cold records.”) (internal quotation marks omitted). Where 

a jury’s findings concerning the prior art are supported by 

substantial evidence, and where a trial court makes its 

obviousness determination based on those findings, I

would exercise caution in wielding our own common sense 

as part of our review of the judgment. 

The asserted claims in this case are based, in part, on

filtering techniques used in two types of information 

systems found in the prior art: content-based systems and 
I/P ENGINE, INC. v. AOL INC. 3

profile-based (or “collaborative”) systems. Content-based 

systems filtered search results for relevance to a user’s 

query, as reflected in “conventional search engines.” See 

Majority Op. at 10 (quoting ’420 patent col.2 ll.15–18). 

Collaborative systems, meanwhile, filtered information 

for relevance based on “the user’s long-term information 

desires or preferences,” and incorporated the information 

preferences of similar users. J.A. 3690.

As the majority explains, the prior art suggested that 

content-based and collaborative filtering could be combined. See Majority Op. at 8–9. The majority identifies 

prior art systems that passed content-based results 

(which were returned based on the user’s query) over to a 

distinct collaborative filter. The query in these systems 

was used only to obtain the initial results; it played no 

role in subsequent filtering on the collaborative side. The 

asserted claims, however, require using the query itself—

not just the results returned by the query—on the collaborative side, thus combining content-based and collaborative filtering. See ’420 patent, col.28 ll.1–15; ’664 patent, 

col.27 ll.27–37.

At trial, experts for both sides testified about whether 

a person of skill in the art would have found it obvious to 

supply the key claim limitation missing from the prior 

art—the use of the query as part of a combined contentbased and collaborative filter. I/P Engine’s expert testified that a person of skill in the art in 1998 would not 

have “appreciated the advantages of tight integration” of 

search systems and profile systems, particularly with 

regard to the “relevance to the query.” J.A. 3739. In 

response, the Defendants’ expert testified that the prior 

art did “feature a tight integration between the search 

system and the content collaborative system . . . [b]ecause . . . it would have been obvious to one of 

ordinary skill in the art that if you are filtering search

results, it’s obvious to keep around the query and use that

also for filtering.” Id. at 3172–73. 
4 I/P ENGINE, INC. v. AOL INC. 

With respect to both patents, the jury found that the 

prior art “did not disclose a tightly integrated search 

system, and could not filter information relevant to the 

query.” J.A. 4170, 4172. The majority downplays the 

significance of the jury’s findings, explaining that the jury 

“never determined whether it would have been obvious to 

one skilled in the art to bridge any differences between 

the prior art and the claimed invention.” Majority Op. at 

17. Without such a determination, the majority suggests,

we must resort to “common sense” to address the question 

left unanswered by the jury—that is, whether it would 

have been obvious to one of skill in the art to use the 

search query as part of the filtering of collaborative data.1

We have explained that “the mere recitation of the 

words ‘common sense’ without any support adds nothing 

to the obviousness equation. Thus, we have required that 

obviousness findings grounded in ‘common sense’ must 

contain explicit and clear reasoning providing some 

rational underpinning why common sense compels a 

1 The majority also concludes that this claim limitation is taught by the Culliss patent because that reference 

“squarely discloses using combined content and collaborative data in analyzing items for relevance to a query.” 

Majority Op. at 11–12. But the majority’s conclusion 

squarely conflicts with the jury’s express finding that 

Culliss “lack[s] any content analysis and filtering for 

relevance to the query.” J.A. 4170. Based on the record, I 

would defer to the jury’s fact finding. In the face of conflicting testimony about what Culliss disclosed, the jury 

was free to credit the opinion of I/P Engine’s expert. See 

Power-One, Inc. v. Artesyn Technologies, Inc., 599 F.3d 

1343, 1351 (Fed. Cir. 2010) (explaining that the jury was 

free to either credit or disbelieve expert testimony about 

“the differences between the prior art and the invention 

claimed”).

 
I/P ENGINE, INC. v. AOL INC. 5

finding of obviousness.” Plantronics, Inc. v. Aliph, Inc., 

724 F.3d 1343, 1354 (Fed. Cir. 2013) (internal citations 

omitted). As the Supreme Court emphasized, “it can be 

important to identify a reason that would have prompted 

a person of ordinary skill in the relevant field to combine 

the elements in the way the claimed new invention 

does . . . because inventions in most, if not all, instances 

rely upon building blocks long since uncovered, and 

claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR Int’l 

Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We may not 

find a patent invalid for obviousness on the basis of “mere 

conclusory statements.” In re Kahn, 441 F.3d 977, 988 

(Fed. Cir. 2006). 

Here, in support of its finding of a “strong prima facie 

case of obviousness,” the majority concludes that “retaining the query for use in filtering combined content and 

collaborative data was entirely predictable and grounded 

in common sense.” Majority Op. at 15, 19 (internal quotations omitted).2 The use of the query is a matter of com2 The majority also takes issue with the jury’s findings on secondary considerations, noting that two of the 

findings with respect to the ’420 patent and the ’664 

patent “appear internally inconsistent.” Majority Op. at

16. The majority generally characterizes the findings on 

secondary considerations as a “mixed bag.” Id. Even 

assuming, however, that the jury’s secondary consideration findings are as muddled as the majority describes, 

they are relevant only insofar as the majority is correct 

that its invocation of “common sense” may support a 

prima facie case of obviousness that must be overcome. 

See Dow Chemical Co. v. Halliburton Oil Well Cementing 

Co., 324 U.S. 320, 330 (1945) (“[Secondary] considerations 

are relevant only in a close case where all other proof 

leaves the question of invention in doubt.”).

 
6 I/P ENGINE, INC. v. AOL INC. 

mon sense, the majority explains, “[b]ecause the query 

was readily available and closely correlated to the overall 

relevance of search results.” Id. at 14. In support of its

suggestion that one of skill in the art would find it obvious 

to use the readily available query, the majority cites the 

testimony of the Defendants’ expert:

As [the Defendants’ expert] explained, the query 

would be just “sitting there” with the results of a 

search, and it would have been obvious to one 

skilled in the art to “keep around the query and 

use that also for filtering.”

Id. (citing J.A. 3173).

I find this testimony inadequate to support the majority’s conclusion. The expert’s “sitting there” explanation 

tells us nothing about whether one of skill in the art in 

1998 would have been struck by common sense to modify 

collaborative filtering systems so as to incorporate search 

queries. All prior art references are “just sitting there” in 

the metaphorical sense. What is needed—and what is 

missing from the cited testimony—is some explanation of 

why one would use the query as the asserted claims do. 

See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 

1374 (Fed. Cir. 2008) (“[S]ome kind of motivation must be 

shown from some source, so that the jury can understand 

why a person of ordinary skill would have thought of 

either combining two or more references or modifying one 

to achieve the patented method.” (internal citations 

omitted)). Such evidence or reasoning is lacking here. 

The testimony of the Defendants’ expert amounts to a 

“mere conclusory statement” that may not serve as a basis 

for finding the asserted claims obvious. See In re Kahn, 

441 F.3d at 988; see also InTouch Techs., Inc. v. VGO 

Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)

(holding that expert’s testimony could not support a 

finding of obviousness where “testimony primarily consisted of conclusory references to [the expert’s] belief that 
I/P ENGINE, INC. v. AOL INC. 7

one of ordinary skill in the art could combine these references, not that they would have been motivated to do so”).

As for the majority’s observation that the query is

“closely correlated to the overall relevance of search 

results,” no one disputes that the prior art taught that a 

query was relevant to a user’s content-based search. 

What is disputed is whether the prior art taught the 

query’s “overall relevance” to collaborative filtering. See

J.A. 3172–73, 3739. To bridge the gap, we must identify a 

non-circular reason that would have prompted a person of 

skill in the art to appreciate the relevance of the query to 

collaborative data. See KSR, 550 U.S. at 418.

The gap in the prior art references here is unlike gaps 

we have encountered in other cases—cited by the majority—where we have found patents obvious for merely 

adding “the Internet” or “a web browser” to a well-known 

prior art reference. See Majority Op. at 14–15 (citing 

Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 

1344, amended on reh’g (Fed. Cir. 2013); Muniauction, 

Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008)). In 

those cases, we observed that skilled artisans had already 

performed the same type of combination with similar 

elements. See Soverain, 705 F.3d at 1344 (finding that 

the use of use of hypertext to perform the known process 

of transmitting documents “was a routine incorporation of 

Internet technology into existing processes”); Muniauction, 532 F.3d at 1326–27 (concluding that “[t]he record in 

this case demonstrates that adapting existing electronic 

processes to incorporate modern internet and web browser 

technology was similarly commonplace at the time the 

’099 patent application was filed”). 

In this case, the majority does not identify analogous 

“routine” combinations that would render obvious the 

patents’ incorporation of the search query into a collaborative filtering system. The asserted patents did not 

merely combine information technology with “the Inter-
8 I/P ENGINE, INC. v. AOL INC. 

net.” Rather, the patents combined elements from two 

known information filtering systems. The patents took 

the query data (input for a content system) and mixed it 

with collaborative data (input for a profile-based system). 

What was claimed was the combination of elements of two 

evolving systems in the field of information science, not a 

combination of a known process and a web browser.

Nor is this case like Perfect Web Technologies, Inc. v. 

InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009), where we 

affirmed a district court’s conclusion that a patent was 

obvious as a matter of common sense. In Perfect Web, the 

asserted patent claimed a four-step method for distributing bulk emails. It was undisputed that the first three 

steps of the method were disclosed in the prior art. Id. at 

1330. The fourth step—which was not present in the 

prior art—recited repeating the first three steps over and 

over until all the emails were delivered. As we described 

the method, it “simply recites repetition of a known 

procedure until success is achieved.” Id. Moreover, we 

found that the “relevant art required only a high school 

education and limited marketing and computer experience,” and that no expert opinion was required to appreciate the value of repeating the three steps. Id. 

In affirming the district court’s conclusion that the 

patented method was obvious, we observed that “simple 

logic suggests that sending messages to new addresses is 

more likely to produce successful deliveries than resending messages to addresses that have already failed.” 

Id. at 1331. To put it another way, one of skill in the art 

would have been motivated to add the fourth step because 

it would increase success—more recipients would receive 

email messages. We identified a benefit that would have 

been readily apparent to one of skill in the art at the time 

of the invention. 

Here, by contrast, the record does not suggest a benefit or rationale that would have caused a skilled artisan to 
I/P ENGINE, INC. v. AOL INC. 9

use the query as part of collaborative filtering in 1998. 

Although we know that the query was “sitting there,” we 

do not know why one of skill in the art would have 

thought that mixing the query with the collaborative filter 

would produce, to use the language of Perfect Web, “successful” filtering. We need something beyond the invocation of the phrase “common sense” or “simple logic” to 

demonstrate the reason to combine the prior art references in this case. See KSR, 550 U.S. at 418; Innogenetics, 512 F.3d at 1374. 

For these reasons, I respectfully dissent from the majority’s holding that the asserted claims of the ’420 and 

’664 patents are invalid for obviousness.